Gairing Tool Co. v. Eclipse Interchangeable Counterbore Co.

• Decision Date: 07 April 1931
• Docket Number: No. 5530,5531.,5530
• Citation: 48 F.2d 73
• Parties: GAIRING TOOL CO. v. ECLIPSE INTERCHANGEABLE COUNTERBORE CO.
• Court: U.S. Court of Appeals — Sixth Circuit

48 F.2d 73 (1930)

GAIRING TOOL CO. v. ECLIPSE INTERCHANGEABLE COUNTERBORE CO.

Nos. 5530, 5531.

Circuit Court of Appeals, Sixth Circuit.

November 5, 1930.

On Petition for Rehearing April 7, 1931.

F. D. Hardesty, of Detroit, Mich., for appellant Gairing Tool Co.

S. C. Barnes, of Detroit, Mich., for appellee Eclipse Co.

Before DENISON and HICKENLOOPER, Circuit Judges, and WEST, District Judge.

HICKENLOOPER, Circuit Judge.

The appellee complained in the court below of the infringement of its patent re-issue No. 16,817, issued December 13, 1927, upon application of John Hugo Smith, for a reaming and counterboring tool. All nine claims of the patent were in issue. Claims 1 and 4 may be taken as typical of the two classes covered, and are printed in the margin.¹ It will be noted that they differ only in that claim 4 (with which claim 6 is to be aligned) requires that the ribs of smaller radii shall number at least three, to pilot the cutting ribs of larger radii. The other claims read equally upon a tool which has but two ribs of the smallest radii. The District Court held claims 4 and 6 valid and infringed, and the remaining claims invalid by reason of anticipation in the prior art. Both parties appeal.

The tool covered by the patent is designed for performing, simultaneously, counterboring, reaming, and chamfering operations upon a casting already provided with a circular aperture, whereby a depressed shoulder (or shoulders) surrounding the existing hole is produced, to exact dimensions as to depth, and the walls of such hole and of the newly produced shoulders are dressed in the same operation.

In the prior art, before Smith, various means were used for thus counterboring and machining. Counterboring tools with a pilot and reaming or dressing tools were common, but these were used upon the turret lathe, successively, each tool performing the single operation for which it was designed. Such tools frequently had three or more ribs to provide the cutting edges. The stepped counterbore was also old in the art and was constructed with three or more ribs to provide cutting edges of different radii, but the cutting edges of greater radii were mounted above and upon the same ribs as the edges of smaller radii. It is thus obvious that in the stepped counterbore of the prior art, the life of the tool was limited to that period within which the grinding for sharpening cutting edges would consume the shortest longitudinal distance between the different radii, for such grinding operations upon the cutting edges of greater radii would almost inevitably cut into the rib of less radius, thus deforming and destroying the dimensions of the cutting edge of lesser radius when that point was reached.

Drills or tools designed primarily for boring, but also susceptible to use for counterboring, in which separate ribs were provided for cutting edges of different radii, such as the tool covered in the patent to Thomas, No. 805,170 (1905), the patent to Bennett, No. 1,000,067 (1911), the boring bar of Heinkel, patent No. 1,337,015 (1920), with its insertable cutters, and the tool of the Ohio Brass Company, referred to in the record as the Mansfield use, were also known and used. But in each of these tools the independent or separate ribs for each radius, never exceeded two.

We concur in the opinion of the District Judge that the evidence establishes the prior invention and public use by the Ohio Brass Company, of a tool with separate, but only two, cutting ribs for each radius, with that degree of certainty and conviction which is required to defeat the patent (Barbed Wire Patent, 143 U. S. 284, 12 S. Ct. 443, 450, 36 L. Ed. 154), and that this use was not of the abandoned experiment type, nor within the lost arts. But even apart from the Mansfield use, it would be extremely difficult to sustain the claims which read upon a tool having only two ribs for each radius, in view of the patents to Bennett and to Thomas, which latter patent also departed from the principle of the stepped counterbore and was an advance in the direction of independent ribs for each radius, although this step was taken merely by providing a clearance and oiling groove, along a major rib, which divided the rib into portions of different radii. Bennett clearly shows two separate ribs for each radius. It follows that the decree finding claims 1, 2, 3, 5, 7, 8, and 9 invalid, and dismissing the bill as to such claims, must be affirmed.

A more difficult question arises as to claims 4 and 6, as to which the defendant below contends invention is not disclosed by the mere increase in the number of separate or independent ribs with their respective cutting edges. As above stated, however, pilots were in common use with the counterboring tools of the prior art when operated upon the turret lathe, and were considered necessary to produce work of accurate dimensions. The tool of the patent in suit provides such piloting means while at the same time the wall of the initial opening is dressed or reamed. The tool of the patent also provides additional means of radiation for the heat developed, and possesses, or retains, the much lengthened life which is due to the fact that the cutting edge of ribs of greater radii may be ground without injury to the ribs of less radii. So far as the present record discloses, the tool of claims 4 and 6 was both new and highly useful. It was immediately and enthusiastically accepted by the trade and has had great commercial success. Smith v. Goodyear Dental Vulcanite Co., 93 U. S. 486, 495, 23 L. Ed. 952. The defendant below has paid it the tribute of extremely close, if not absolute, imitation. The need existed for many years, but was not theretofore met, machinists preferring to...